Brand Owners Want to Rev Up RPMs

On the afternoon of Wednesday, September 5th ICA attended a meeting on rights protection mechanisms (RPMs) for new gTLDs held at the U.S. Department of Commerce in Washington. About 40 persons attended in person, with another half dozen connected by phone, and almost all of them were from law firms, trade associations, corporations, and consultancies representing major brand interests. ICA was the only party in the room with a registrant-centric perspective and, while we understand brand owners’ concerns regarding the prospective costs of defensive registrations and the cybersquatting potential associated with 1410 unique new gTLDs, we also want to assure that registrant due process rights don’t get trampled as those concerns are addressed.

The meeting opened with brief introductory remarks from the co-hosts – NTIA Administrator Larry Strickling and USPTO Director David Kappos. Following that, the brand representatives reported on a “Brand Summit” they held in New York City in June in which they evaluated a wide variety of alterations of and additions to the existing RPMs for new gTLDs – the Trademark Clearinghouse (TMC) and Uniform Rapid Suspension (URS). While brand owners have not yet differentiated between those proposals that are most important versus those that are most implementable – much less prioritized within those groups – their unified message was that RPMs that were tolerable in a contemplated world of 250-500 new gTLDs are no longer deemed sufficient in one of more than a thousand new right of the dot extensions.

While there was substantial difference in emphasis and detail from various meeting participants, some of the ideas they were throwing out for consideration included:

· Having the TMC generate warnings for more than just exact matches for trademarks, and extending the TMC’s operations far beyond the first 60 days of a new registry’s operation.

· Adding all domains lost in UDRPs to the list of terms that would generate TMC warnings.

· Changing the burden of proof for the URS, adding a domain transfer option, and instituting “loser pays” for the registrant of even a single domain at issue.

· Encouraging new registries to institute a one-time fee for permanent non-resolution of a TM-related domain.

While ICA will give fair consideration to all of the ideas that brand owners put on the table when full details emerge, we did speak up at several points to provide the perspective of registrants and domain portfolio owners. We pointed out that there is a major difference between going from exact matches for the TMC to the trademark plus terms related to the services it covers, to letting TM owners use “name spinners” to designate hundreds or thousands of potential domains based upon a single TM that would generate warnings when submitted for registration. We also noted that most domain registrants have little or no knowledge of trademark law and lack the funds to hire expert counsel for advice, and would likely be spooked by these warnings and could well abandon their attempt to register perfectly non-infringing domains at new gTLDs.

As for the URS, ICA reminded attendees that it was conceived as a narrow supplement to the UDRP and that reducing a complainant’s burden of proof and providing the option to acquire the domain would render it a cut-rate substitute, a transformation we would strongly oppose. We also expressed concern about any attempt to institute an across-the-board loser pays regime, especially if anything other than slam dunk infringement was considered within the URS process.

One point on which both ICA and brand representatives did concur was that ICANN’s inexplicable refusal to initiate URS implementation must be addressed, and the sooner the better.

For their part, the hosts of the meeting listened politely but did not endorse any of the suggestions, although they did commit to follow-up interagency discussions. It was pointed out that some of the proposals have been raised before and went nowhere within ICANN, and questions were raised about what process would be utilized to place them before the broader ICANN community and its Board. It was also indicated that the U.S. would be reluctant to undertake any unilateral communications on these matters to ICANN’s Board.

It’s hard to know where all of this is going. But it is clear that between now and the 2014 launch of new gTLDs there will be continuing coordinated pressure from brand interests for substantial revisions of the existing RPMs and consideration of additional measures.

As this debate moves forward ICA will continue to remind all concerned that there must be a proper balance between the protection of consumers and rights holders with the legitimate due process rights of domain registrants – that, indeed, the entire success of the new gTLD program may depend on maintaining that balance.